Concentration

Summary

Paul Ragusa is a partner in the Intellectual Property Department in the firm's New York office. His practice encompasses all aspects of intellectual property law with emphasis on patent, copyright and related antitrust litigation, patent portfolio management, counseling and licensing.

His work spans a variety of high technology fields, including audiovisual compression and transmission, semiconductor device fabrication, telecommunications, digital signal processing, software and Internet applications. He was part of the team that drafted the patent licensing agreements directed to the MPEG-2 digital video compression standard. Mr. Ragusa is "highly recommended for his hi-tech work" according to the Legal 500 US 2010 guide.

Mr. Ragusa is a member of the Advisory Board for the IP Litigator, and serves as the co-editor for the Baker Botts IP Report. He is heavily involved in the analysis of intellectual property-related topics concerning the practical implications of important court decisions.

Representative Engagements

• Columbia University－development, management, and licensing of a worldwide patent portfolio directed to a wide range of technologies, including audiovisual compression and transmission, medical devices, nanotechnology, semiconductor devices, digital signal processing, superconductivity, optical devices and materials science and counseling concerning the group licensing of patents by MPEG-LA
• Ethypharm, S.A.－ANDA related intellectual property litigation, licensing and counseling for patents related to methods of delivering pharmaceutical products
• Plasma Physics, Inc.－successfully tried a patent infringement action against Chi Mei Optoelectronics Corp. in the United States District Court for the Eastern District of New York, resulting in findings of infringement and validity of two patents and a significant damages award for patents directed to semiconductor processing using plasma enhanced chemical vapor deposition (PECVD)
• American Dynamics Flight Systems, Inc.－development and management of a patent portfolio directed to aviation and patent licensing
• IMS Health, Inc.－complete range of intellectual property representation, including litigation in software-related cases, negotiating patent licenses and development and management of a worldwide patent portfolio directed to computer systems, software and methodologies related to healthcare, pharmaceutical and prescription information services
• Allied Bolt, Inc.－complete range of intellectual property representation, including negotiating patent licenses, and development and management of a worldwide patent portfolio directed to fasteners
• American Calcar, Inc.－successfully tried a patent infringement action against American Honda Motor Co. in the United States District Court for the Southern District of California
• Vidyo, Inc.－complete range of intellectual property representation, including negotiating patent licenses, counseling, opinions and the development and management of a worldwide patent portfolio directed to audiovisual compression and transmission

Publications, Speeches and Presentations

Publications

• "Practical Strategies for Patent Marking of Software-Related Inventions," IP Litigator, July/August 2011 (Eric Faragi, co-author)
• "The Use of Antitrust Evidence in Patent Litigation," The AIPLA Antitrust News, February 2011 (Jeremy Merling, co-author)
• "Application of the Common Interest Doctrine in Patent Cases," NYIPLA Bulletin, October/November 2010 (Christopher Patrick, co-author)                   
• "Practical Applications of Intervening Rights As a Defense to Patent Infringement," IP Litigator, May/June 2010 (Yong Chen, co-author)
• "Patent Pool Participants Await Clarity Regarding Need to Make Separately Available Licenses to Competing Technologies," IP Litigator, March/April 2010 (Jason Chumney, co-author)
• "ALI's Principles of the Law of Software Contracts and the GPL Continue to Complicate The Use of Open Source Software," Bloomberg Law, December 2009
• "New Challenges In Software Law And Policy, And Continued Open Source Complications, Challenge High Tech Market," Baker Botts Intellectual Property Report, October 2009
• "The Risks of Failing to Properly Name Investors on Patents," Law Journal Newsletters, July 2009 (Jason Chumney, co-author)
• "The Changing Tide of Declaratory Judgment Jurisdiction in Patent Cases," Patent Strategy & Management, May 2009 (Jennifer Lazo, co-author)
• "Recent Developments in ANDA Settlements - Getting Past the Antitrust Hurdle," AIPLA Antitrust News, May 2009 (Sandra Lee, co-author)
• "Patent Damages Analysis: Maximize Admissibility And Reliability of Proposed Expert Testimony," Patent Strategy & Management, February 2009 (Jeremy Merling, co-author)
• "ANDA Litigation Discovery: What the Patent Owner Should Seek," Patent Strategy & Management, June 2008 (Sandra Lee, co-author)
• "Patents and Open Source Software: New Issues Raised in the GNU General Public License v3.0," Patent Strategy & Management, February 2008 (Edward Tempesta, co-author)
• "Supreme Court to Reconsider Patent Exhaustion," Patent Strategy & Management, November 2007 (Noera Ayaz, co-author)
• "Opinion: Worldwide Recovery for Infringement of Software Patents? Not So Fast, Says the Supreme Court in Microsoft v. AT&T," In the News/Computer World.com, July 2, 2007
• "The Patent Marking Statute: Investigate Before You License," Patent Strategy & Management, April 2007 (Peter Withstandley, co-author)
• "Reevaluating Copyright in the YouTube Age," IP Law360, March 2007 (Suzanne Hengl, co-author)
• "Be Wary of What You Ask For: The Dangers of Improper Claim Drafting," Patent Strategy & Management, December 2006 (Lisa D. Tyner, co-author)
• "Small Entity Status: Potential Pitfalls and Curative Measures," Patent Strategy & Management, August 2006
• "Patent Antitrust Law: Limiting the Conduct of Patent Owners," The Licensing Journal, April 2006 (K. Burns McNamee, co-author)
• "Recognizing a Problem Is the First Step: Federal Circuit Acknowledges Unsettled Law, but Declines to Clarify Requirement for Induced Patent Infringement," Patent Strategy & Management, April 2006 (Edward Tempesta, co-author)
• "The Market Power Presumption: Court to Consider Whether Patents Confer Market Power in Tying Cases," The Intellectual Property Strategist, February 2006

Speeches and Presentations

• "Strategies for Minimizing Patent Litigation Costs: Recent Developments in Patent Reexaminations, Venue Selection and Declaratory Judgment Jurisdiction," Baker Botts Seminar, Munich, November 2009
• Advisory Board Member, 3rd Patent Strategies, IQPC, New York, March 2007
• Moderator, Maximizing Value From Your IP Portfolio: Extracting Income Through Royalties and Financial Plays, Directors Roundtable, New York, February 2007
• Moderator, Strategies for Effective Intellectual Property Litigation, Directors Roundtable, New York, April 2005
• "How to Build an IP Protection Program," Baker Botts Seminar, New York, November 2004